'Z.S3 



LIBRARY OF CONGRESS 

iiiiiiiiiiiiiiiiiiiir 

019 974 497 5 



THE "STATE OF THE ART" IN PATENT 
CASES. 



H. BOVIE SCHERMERHORN, ESQ., 

of the Philadelphia Bar. 



'Read before The Engineers' Club of Philadelphia, cMarch 7, 1903. 



^- ^fS-yQ r. 



[Authorized reprint from Vol. XX, No. 2 (April, 1903), of the copyrighted Proceedings 
OF The Engineers' Club of Philadelphia.] 



THE "STATE OF THE ART" IN PATENT CASES. 

H. BOVIE SCHERMERHORN. 
Read March 7, 1903. 

It has been suggested that a paper on a subject connected with 
the law of patents for inventions might be of interest to members 
of The Engineers' Club. The subject of patents and the patent law 
is not so far removed from the interests of the engineering profession 
as might at first thought be supposed. The patent soUcitor must 
note and understand mechanical differences and resemblances as 
well as the legal effect of such differences and resemblances upon the 
case in hand, the patent law being a curious compound of law and 
mechanics, while on the other hand the engineer is frequently called 
upon to deal with the subject of patents and the patent law, if from 
no other standpoint, at least from that of an expert engaged to assist 
counsel in patent litigation. Most of the engineers present this 
evening have engaged in patent causes in this capacity as experts, 
and every engineer is hkely to be called upon at some time in his 
professional experience to deal with the question of patents from this 
aspect at least. 

Every engineer who has acted as an expert in this way has heard 
repeated in the course of the case one phrase more frequently than 
any other, and that phrase is "the state of the art," and he has recog- 
nized sooner or later that upon this phrase frequently depends the 
fate of the patent in suit. It is the meariing and scope of this tech- 
nical expression, "the state of the art," and its effect upon patents 
for invention that I wish to explain this evening. 

The expert can co-operate with counsel far more effectively if he 
knows, in a general way at least, to what end Ms testimony or his 
research tends, and what bearing it has upon the merits of the case 
in hand. 

Our government, in granting a patent to an inventor, confers upon 
him a monopoly of the invention for seventeen years. As a return 
for this benefit conferred the government demands of the inventor 
two things: That the invention shall be useful and that it shall be 

1 



^<^ 



V 



new. The degree of usefulness is immaterial provided the invention 
be in fact an operative device or apparatus. But on the score of 
novelty the demand of the government is absolute. Both to obtain 
a patent and to maintain it after grant it must possess novelty. Other- 
wise the condition fails upon which the government granted the 
monopoly and the monopoly is at an end. 

Now, there may be novelty in two senses — ^novelty from the stand- 
point of the individual and novelty from the point of view of the 
world at large. An achievement in some branch of engineering 
might be a novelty to me while it was an old story to the engineering 
profession. The standpoint of the Patent Office and the patent law 
is the standpoint of the world at large. All they ask is, "Has this 
that the inventor claims to have done for the first time ever been 
accompHshed before?" If it has, then it matters not that the in- 
ventor was totally ignorant of the prior achievement; his application 
will be rejected and his patent declared invahd. 

The position sometimes taken by inventors in this regard is some- 
what as follows: They say, when met by a prior patent covering the 
same ground with their invention, "I knew nothing of this prior 
patent at the time that I made my invention. I acted in good faith 
in perfecting my device and in entire ignorance of anything that had 
gone before me. Why, then, should I be refused the title of inventor 
because of a prior patent covering the same ground, but of which I was 
entirely unaware?" From the standpoint of the inventor this objec- 
tion seems an entirely reasonable one, but the patent law upon this 
subject is not based upon the point of view of the inventor or the 
individual, but upon the point of view of the world and the community 
at large. 

The patent law, realizing the impossibility of determining the 
good faith of an inventor in this respect, has taken the position 
that if the state of the art discloses the device, the new-comer can- 
not claim any title as inventor thereof. The object of the Patent 
Office is to issue as far as possible one patent for each invention and 
to avoid the overlapping of inventions or claims in patents issued 
by the office. Therefore the law broadly assumes the position that 
an inventor must take notice, as the expression is, of the state of the 
art, and it results from this that if a patent is inadvertently issued 
for something which is already embraced in the state of the art, that 
patent is liable to be invalidated in case this instance of prior publi- 
cation or prior use, as the case may be, is brought forward against it. 



In other words, it is the state of the art and not the inventor's 
claim, that is used as a standard of measurement by which to ascer- 
tain the true degree of novelty exhibited by his invention. 

It will perhaps facilitate our view of this point if we briefly describe 
the process of obtaining a patent for invention in this country. The 
inventor, having perfected his device in what he considers its most 
complete and available form, applies for a patent thereon. » In doing 
so he in effect says: "I have invented this apparatus or this improve- 
ment upon a pre-existing apparatus and I ask the government to 
protect me in my rights as an inventor by the grant of a patent." 

The Patent Office, upon receiving his application, replies in effect: 
"You claim to be the original and sole inventor of this device or 
this improvement. Let us see whether you are or not." And the 
Patent Office thereupon proceeds through the exairdner in charge 
of the case to point out to the appUcant any instances of prior use, 
prior publication, or prior patent which may go to show that the 
inventor was mistaken in his idea that he was the first and original 
inventor of this device and that in point of fact the device is old 
and has been already patented or is already known and used. 

The Patent Office examining staff is composed of about forty 
examiners, each having from four to six assistants. They have at 
their disposal a complete collection of all United States letters-patent 
issued since the institution of the office, and in addition foreign letters- 
patent and a large technical library of engineering periodicals similar 
to that possessed by the Franklin Institute in this city and the hbrary 
of The Engineers' Club. Assisted by this qollection of prior patents 
and of technical literature, the examiner in charge of the application 
points out to the inventor any instances of prior patent or prior 
publication going to show, as I have said, that the device has been 
already patented or already published and described. 

The inventor thereupon proceeds to distinguish between his inven- 
tion and the references cited against him, and thus by an alternate 
action between the inventor, or his attorney acting for him, and the 
examiner in charge of the appHcation an understanding and agree- 
ment is reached as to just how much field the inventor is entitled to 
occupy in view of the state of the art. 

For all this prior material, this mass of prior United States and 
foreign patents and of publications and technical literature pertaining 
to the subject-matter of the invention, constitutes as to that invention 
the state of the art. 



Sometimes the reference in the shape of a prior patent cited by 
the examiner is, so to speak, on all fours with the device disclosed 
by the application. In such case, where it is impossible for the in- 
ventor to distinguish his device from the prior reference cited, the 
case ends then and there. Usually, however, this is not the case. 
The references cited by the examiner show that a portion of that 
field only which the inventor supposed he was solely entitled to 
occupy has been already preempted, but that a part of the field still 
remains open to him; and having, as I have said, reached an under- 
standing as to just the extent of the field which the invention dis- 
closes, as to just the amount of inventive material embraced in the 
application, a patent for that amount of invention, neither more nor 
less, is sealed and issued to the inventor. 

Now, we can explain this expression, "the state of the art," in 
another way. Let us suppose that this rectangle represents the sum 
of all the inventions that have gone to make up some piece of ma- 
chinery which stands to-day in a highly finished form. Let us take, 
for example, the modern express locomotive. Let us suppose that 
the area covered by this rectangle represents the total number of 
inventions going to make up in the aggregate the express locomotive 
as it stands to-day. The largest single share or slice of this field 
was that preempted by the original inventor of the locomotive, 
Stevenson. As soon as men's minds were turned toward the possi- 
bilities involved in this new apphcation of the expansive force of 
steam, inventions and improvements along this line followed one 
another with great rapidity, and the earlier inventions were doubtless 
of a very high degree of value and covered a field perhaps almost 
as large as that originally preempted by Stevenson, the pioneer 
inventor. Thus we can mark off successive sections of the total 
field and we notice that as we reach the end, and in proportion as 
we reach the end, the area remaining grows less, and we consequently 
find that to-day an invention in improvement of the locomotive 
does not go to the whole of the machine, but is a mere improvement 
upon ■ some preexisting and well-known part, efficient, useful, but 
not comparable in any wise to the extent and scope of the earher 
inventions along this fine. Now as to the inventors of to-day who 
wish to improve upon the locomotive, all this immense area stretching 
away back of them in the shape of prior patents. United States and 
foreign, that have already been granted for inventions and improve- 
ments upon the locomotive, constitute the state of the art, and each 



new-comer's invention is to be measured by this state of the art 
extending behind him and its scope and extent determined by that 
state of the art. 

In other words, if to the inventor of to-day the state of the art 
discloses anywhere in this prior mass of patents an instance of in- 
vention substantially equivalent and similar to his own, then he can 
no longer obtain a patent upon that improvement. If the prior art 
discloses only a portion of that which he has invented, then he is 
entitled to a patent for the remainder. It is thus apparent that upon 
the state of the art depends the question whether there is any inven- 
tion at all in a given case, and if there be invention, how much inven- 
tion is shown and may be patented. 

We see then how important it becomes, both before applying for 
a patent and in many instances after the patent has been granted, 
to determine accurately the state of the art in that particular field 
of invention. If the inventor is to be fully protected, he must know 
just the extent of field covered by his invention and adequately 
claim that field in his patent. To know how much new field his 
invention covers, he must know to what extent the whole field has 
already been covered by prior invention, for it is only by placing, 
so to speak, his own achievement side by side with the sum of past 
achievements in the direction of his invention, that he can measure 
his own step in advance. 

The strength of a patent depends upon the extent to which it 
fulfils two conditions: 

First, the accurate determination of the degree of advance which 
the invention in question discloses beyond all previous inventions 
along that particular line; and. 

Second, the framing by the inventor and allowance by the Patent 
Office of a specification and claims that shall accurately embody the 
precise degree of advance thus ascertained. 

Given the first condition, a skiUed patent soHcitor can fulfil the 
second; but the second condition is dependent upon and valueless 
without the first. If the inventor and his solicitor have not before 
them all that has hitherto been done by others in the field of the 
particular invention, the utmost care and skill in framing the speci- 
fication and claims, and in carrying the application through the 
Patent Office to issue, may be subsequently defeated by the results 
of a later and fuller investigation made by hostile interests, as in the 
case of a defense to a suit for infringement. 



It is my present purpose to consider what a complete fulfilment 
of the first condition involves; what ground must be covered in its 
fulfilment; how far it is possible successfully to cover the ground; 
and to what extent this is accomphshed by the various classes of 
searches or examinations made in connection with inventions and 
letters-patent. 

This prior ground in connection with an invention is known tech- 
nically as "the state of the art/' and as all questions respecting the 
grant and validity of United States letters-patent are controlled and 
determined by the federal statutes at large, and the rules of the 
Patent Office made in accordance therewith, we must look to these 
laws and rules in the first place to ascertain what conditions they 
impose upon the inventor in this respect. 

The statutes and rules provide: 

1. That inventors shall take notice of the state of the art. 

2. That inventors may not carry their date of discovery or inven- 
tion more than two years back of the date of their apphcation, no 
matter how much more than two years prior to application that date 
may in reality be. 

This is equivalent to the statement that no patent shall be granted 
for a device if it be found that such a device was known or used at 
a date two years or more prior to the application for patent thereon, 
and that if an inventor on applying for a patent encounters such an 
instance of prior knowledge or use, he cannot, in his effort to show 
that he was the first inventor, carry his date of invention more than 
two years back of his date of application. 

The reason for the first provision is obvious. When a device has 
once been used or described, it can no longer be considered new or 
novel in the sense in which the patent law uses those terms; and no 
subsequent use or description of it can constitute invention in the 
sense in which the patent law uses it. It matters not that the later 
inventor is acting in good faith and without the least knowledge of 
the prior discovery. The law charges him with notice of the prior 
discovery, whether as a matter of fact he knew or did not know of it. 
And a Httle consideration will show that however apparently unjust 
this may appear, it is the only equitable and practicable course. 

The second provision — that relating to the two-year rule — ^is of 
recent date and arose in this way: Formerly, an inventor, having 
conceived his idea, could let it lie for five or ten years, or more, and 
then defeat a later and more diligent applicant by proving priority 



of invention. Or an applicant, finding his progress through the 
Patent Office barred by a prior patent, might by forged affida\dts 
and concocted proofs carry his date of invention back of the prior 
patent and thus secure the grant of a patent to himself. In a case 
with which I was connected a few years ago the application was filed 
in 1876; the patent was not issued until 1885, and the inventor, en- 
countering certain references while passing through the Office, proved 
his date of invention as of 1866 — ten years prior to his date of appli- 
cation. It was to do away with such unjust and possibly fraudulent 
practices that the two-year rule was enacted. 

For the benefit of the inventor and those interested with him, it is 
therefore fundamentally essential to determine before applying for a 
patent, 

1. Whether the appHcation will be granted by the Patent Office. 

2, Whether, if granted, the patent grant can be subsequently 
upheld. 

After grant and issue of the patent, the same question may be 
put from another standpoint; i. e., through prospective purchasers of 
or investors in the patent asking whether it is valid and can be pro- 
tected against infringement in the event of a suit; and what scope 
in such case the courts wiU accord to its claims. 

What ground must be covered in order to correctly and fully deter- 
mine these questions — viz., the propriety of applying for a patent 
or the validity of one already granted? Broadly stated, we must 
determine the state of the art prior to the inventor's date of invention; 
that is to say, we must determine what instances, if any, there have 
been of prior use, prior patent, or prior publication of the invention, 
bearing in mind that an inventor cannot carry his date of invention 
at most. more than two years back of his date of application for the 
purpose of avoiding such anticipation. 

A search completely disclosing the state of the art must show: 

(a) Whether the invention was known and used, in public use, or 
on sale in the United States at any date more than two years prior 
to the date at which the present inventor appHed or purposes to 
apply for a patent. 

This could only be ascertained by an inquiry extended throughout 
the United States among all parties engaged in the manufacture, 
sale, or use of similar articles or appliances. And to overlook a single 
clear instance of prior use is to overlook that which may be brought 
forward later to destroy the patent. 



(b) Whether the invention has been described in any printed pub- 
lication either in the United States or in any foreign country, at any 
date more than two years prior to the date at which the present 
inventor apphed or purposes to apply for a patent. 

This could only be ascertained by estimating the earliest date at 
which it is possible that such an invention could have been conceived, 
and instituting a search from this date down to within two years 
of the patent in question. This search would have to be extended 
through all printed matter, home and foreign, such as would be in 
any degree likely to contain the subject-matter sought. 

(c) Whether the invention has been patented in any foreign patent- 
granting country at any date more than two years prior to the date 
at which the present inventor applied or purposes to apply for a 
patent. 

This could only be ascertained by an examination of the printed 
and pubhshed patents of each country, from the earliest probable 
date at which such a patent might have been taken out down to 
within two years of the patent in question. 

(d) Whether the invention has been patented in the United States 
at any date more than two years prior to the date at which the present 
inventor applied or purposes to apply for a patent. 

This could only be ascertained by an examination of the United 
States patents as set out in the case of c. 

In this connection it is essential to state briefly what amounts to 
or constitutes prior use or prior publication. 

Prior Use: "To constitute a prior use the identical idea of means 
expressed in the present invention must have been reduced to practice 
and made available for immediate use. Neither a sketch of the 
projected art or instrument as the inventor has conceived it, nor 
drawings whether with or without verbal description, nor any model 
other than a practical and working instrument, nor even an applica- 
tion for a patent, can fulfil this requisite, since each or all of these 
can be produced without the existence of an operative and available 
invention." (Robinson on Patents.) 

In Worstwick Mfg. Co. vs. Steiger (1883), 17 Fed. Rep., 250, the 
Court said: ''It will be noticed that the claim of this patent is a com- 
bination claim consisting of several elements that co-operate together 
to produce the device claimed. This device, then, can only be antic- 
ipated by a prior device having identically the same elements, or 
the mechanical equivalents of those that are not used. It will not 



9 

do to find in older devices a portion of these elements in one machine, 
another in a second machine, another in a third, and so on, and then 
say that this device is anticipated." 

In Gottfried vs. The Philhp Best Brewing Co. (1879), 5 Bann. and 
A. 4, the Court said: "It will be admitted that to justify the Court 
in overthrowing a patent granted for what appears to be a new and 
useful invention or improvement, on the ground that the device has 
been anticipated by another and earlier invention, the Court should 
be well satisfied by clear and credible testimony; that it was a perfected 
device, capable of practical ' use ; that it was embodied in distinct 
form, and carried into operation as a complete thing, and was not 
of such a character as to entitle it only to be regarded as an unper- 
fected or abandoned experiment." 

Prior Publication: Such publication must be (1) a work of pubUc 
character intended for general use; (2) within reach of the pubhc; 
(3) published before the date of the later invention; (4) a description 
of the same complete and operative art or instrument; and (5) so 
precise and so particular that any person skilled in the art to which 
the invention belongs can construct and operate it without experi- 
ments and without further exercise of inventive skill. Unless a 
publication possesses all these characteristics it does not place the 
invention in the possession of the public, nor defeat the claim of its 
reinventor to a patent. 

"The invention described in the publication must be identical in 
aU respects with that whose novelty it contradicts. The same idea 
of means in the same stage of development as that which the in- 
ventor of the later has embodied, must be thereby communicated 
to the public. The invention thus described must also have been 
a complete and operative act or instrument, ready for immediate 
employment by the public. And it must be described not as a mere 
hypothesis, either in method or in possibility, but as an existing fact 
already known." (Robinson on Patents.) 

The publication must not only be intended for the public, it must 
also have been placed within its reach. In other words, it must 
have been actually published in such a manner that any one who 
chooses and seeks may avail himself of the information it contains. 
It is not necessary that many copies of the work should have been 
printed, nor that its distribution should have been extensive; for the 
deposit of a single copy in a hbrary to which the pubHc has or can 
obtain admission places the work within the reach of all. Nor is it 



10 

requisite that any person should have read or seen it, since the accessi- 
bihty of knowledge and not its actual possession is all that any inventor 
can secure. And even though the information be- so intermingled 
with discussions relative to other subjects that it may easily escape 
attention and would require some skill and patience to extricate it, the 
pubhcation will still be sufficient. 

The foregoing explanations will serve to show in a general way 
what is meant by the terms ''prior publi-cation " and "prior use." 
It therefore amounts to this: That if the state of the art discloses 
anticipation in the shape of a prior use or a prior pubhcation of the 
character above explained, and of such a date as the inventor cannot 
overcome, regard being had to the two-year rule, then such an appU- 
cation is inadvisable, and if application is, nevertheless, made and 
a patent is granted thereon, such patent is invahd. 

Having stated the requirements of the law as to novelty and the 
manner in which those requirements are construed by the- courts, it 
remains to consider what means we have for fulfilling those require- 
ments by ascertaining the state of the art and consequently the 
degree of novelty exhibited by any particular invention. 

To throw Ught upon the state of the art, recourse is had to searches. 
They are practically divisible into four classes: 

1. The search made by the inventor or his attorney prehminary 
to apphcatibn. 

2. The search made by the Patent Office exaiTiiner in charge of 
the apphcation during its progress to grant and issue. 

3. The search made on behalf of prospective purchasers of or in- 
vestors in the patent, after grant, to determine its strength and scope. 

4. The search made by a defendant when sued for infringement 
and seeking to establish anticipation of the patent as his defense. 

1. What the search prior to apphcation covers: The first search 
usually made is by the inventor or his attorney prior to appl5dng 
for a patent. It is rare for this search to be extended beyond prior 
United States patents along the particular subject-matter of the 
invention. 

2. What the Patent Office search covers : The apphcation appearing 
to be novel is filed in the Patent Office and thereupon the examiner 
in charge cites against it prior United States patents which he con- 
siders pertinent, also prior foreign patents and to some extent prior 
publications. 

The United States patents are classified and arranged in accordance 



11 

with an elaborate system in such wise that the examiner in each 
department is supposed to have under his eye at the time that he 
is examining an appHcation every prior United States patent already 
granted for the same or a similar subject-matter. Beside this mass 
of prior patents he places the applicant's device and determines the 
degree of patentabihty in accordance with this comparison. 

It is somewhat unusual to have prior foreign patents cited against 
an application in our Patent Office, and still more unusual to have 
prior publications in technical and engineering journals cited against 
an application. I am told, however, that in electrical cases and 
other special classes of invention the citation of prior pubHcation 
and prior foreign patents is very common. 

It is proper in this place to refer to a very general misconception 
regarding the examination as to novelty which an application under- 
goes in passing through the Patent Office. There is a prevalent 
impression that an appHcation is subjected to so thorough and ex- 
haustive a scrutiny in its passage through the Office that its final 
grant and issue amount to a guarantee of its novelty, and that the 
patent is thereafter safe from attack. A httle consideration will show 
how far this view is from the truth. 

Suppose the examiner decides that a certain prior patent does not 
constitute an anticipation. This is necessarily only a matter of 
opinion, and his judgment may not be infallible. It happens by 
no means infrequently that the courts adjudge a patent invalid 
because of anticipation by a prior United States patent which the 
examiner possibly had before him and decided to be no bar to the 
appHcation. It amounts, then, to this : that in granting a patent the 
Office merely says in effect: "In our opinion such prior patents as 
already exist along this fine constitute no anticipation of your in- 
vention. This conclusion has been reached by a more or less qualified 
expert in this class of apparatus or devices, aided by a carefully 
classified fist of all prior United States patents bearing upon the 
subject. -But we do not and cannot guarantee to you the correctness 
of our conclusion. " 

Of course, the abifity and skiU of the examiners vsiTy in the different 
divisions of the Office, and the average of abifity is fairly high, but 
the inconclusiveness of their judgments is shown by the fact that 
out of all the United States patents subjected to the scrutiny of an 
infringement suit a large number are declared void by the courts 
because of anticipation by prior United States patents. 



12 

This is the second search made to determine the state of the art. 
Now should the patent issue and the inventor attempt to dispose 
of hife invention to capitalists, those who undertake to put money 
into an invention for the purpose of exploiting it will rarely do so 
without making or having made an independent examination into 
the state of the art, in order to determine the value or validity of 
the patent. 

Such a search, if made by a competent attorney, is usually of more 
value than either of the two searches preceding, for the reason that 
we have the advantage of all the information elicited by the preceding 
examinations and in addition thereto a more complete examination 
into the prior foreign patents is often made than is made by United 
States Patent Office before grant. It is made from a skeptical stand- 
point, throwing the burden of proof strongly upon the patent to 
establish clearly its rights. It may and often does cover both the 
home and foreign field of prior patents more completely than the 
Washington Office, and the bearing of any prior patents upon the 
patent in question is apt to be more fully and carefully considered. 
Through the interests involved, more time and expense are justified 
than in the search made by the Washington examiner, and a broader 
field is usually covered by such an examination. 

None of these three searches enumerated does or can cover, however, 
the entire field embraced in the state of the art, for the reason that 
at most they can only take account of prior United States and foreign 
patents and of the more notorious instances of prior publication in 
well-known technical journals and publications. 

But this, although an immense field in itself, is by no means the 
entire field occupied by the state of the art, for we have in addition 
thereto to reckon with instances of prior use. 

It is, in the nature of things, impossible for either the Patent Office 
or an attorney making an independent examination to ascertain 
whether a device patented or proposed to be patented has been 
already in use, since that use may have taken place in any quarter 
of the United States, and provided it is such a use as answers the 
requirements of the patent law, it would nevertheless, in spite of 
its having taken place in an obscure quarter and for a very short 
period of time, be sufficient to overturn the patent against which 
it was brought forward. 

Therefore we come to the fourth and last examination into the 
state of the art, which is practically made in connection with letters- 



13. 

patent and that is in the course of a suit for its infringement. Every 
engineer who has acted as an expert assisting counsel in cases of 
this description is well aware that the defense set up by an infringer 
is usually divided into two branches ; first, non-infringement — that is, 
that his device as manufactured and sold does not actually in point 
of mechanical resemblance infringe the plaintiff's patent; and second, 
that granting that there is infringement in the case, the plaintiff's 
patent is invahd because anticipated by a prior patent, a prior publi- 
cation, or an instance of prior use. This latter defense is by far the 
most common in these cases, and it is this defense which brings up, 
so far as it is possible to bring it up, the entire state of the art in 
connection with any patented device involved in such htigation. The 
interests involved in these suits being frequently very large, both 
sides are eager, the one to bring forward an instance of anticipation, 
the other to defend the patent, and the four quarters of the civilized 
world are usually ransacked for instances of prior publication, prior 
patent, or prior use. 

It is only after a patent has passed this ordeal that it can in any 
true sense be considered as estabhshed, for the reason that it is only 
in such cases that the state of the art by which the degree of invention 
shown by a patent is measured is brought forward, if at all, to any 
complete degree in suits for infringement of letters-patent. All that 
is then brought forward and passed upon by the court becomes 
practically res adjudicata as to the patent in question. For these 
reasons it is often said that a patent is not a truly valuable, marketable 
commodity until it has passed the ordeal of an infringement suit. 

We thus see over how enormous a field our inquiry must be ex- 
tended if we would know the precise status and validity of our patent. 
It is a field co-extensive with the civihzed world and the intellig'ent 
acti^dty of men. And the natural conclusion is that patents for in- 
vention are precarious and uncertain things unless refined in the 
fire of an exhaustive judicial investigation. 

The foregoing may be considered to present perhaps a very gloomy 
outlook both for the would-be inventor, the actual patentee, or for 
those having capital invested in a patent, since it is easy to see that 
it is quite impossible in the ordinary run of cases to fuUy ascertain 
beyond peradventure that the state of the art does not somewhere 
contain an instance of anticipation. It is only proper, therefore, that 
we should consider briefly the redeeming features of the situation. 
In the first place, a very small percentage of the patents granted 



14 

are subjected to this ordeal of an infringement suit, and in -the case 
of those involved in an infringement suit there still remains the saving 
grace accorded by the courts in their point of view regarding such 
patents. 

The grant of a patent by the government creates a 'prima facie 
presumption in favor of the patent. The courts realize that the 
patent law has been established for eminently utiUtarian purposes, 
to encourage invention and to promote the industries and the useful 
arts. Therefore they are active to protect a patent involved in suit 
and to sustain it until and unless an undoubted instance of prior 
publication or prior use is brought forward against it. 

Every intendment is made in favor of the patent, and an instance 
of prior pubhcation or prior use must, so to speak, be on all fours 
with the patent before the courts will allow it as an anticipation. 
Therefore, as wide as may be the field in which an instance of anticipa- 
tion may be sought and found, it is nevertheless offset by this fact, 
that it will not do to find an instance of partial anticipation or to 
bring forward a part of the patent shown in one prior device and 
another part in another prior device and, putting them together, 
say there is here an anticipation of the patent. The court requires 
that the anticipation shall be a prior publication or prior patent 
or instance of prior use of a device which substantially in all its details 
answers to the device involved in suit. 

The infringer knows that the burden and expense of proving antici- 
pation lie upon himself, while the patentee can stand upon the grant 
of his patent by the government until it is overthrown. And before 
it can be overthrown a clear anticipation must be shown. If there 
is a doubt, it is resolved by the courts in favor of the patentee. The 
attacking party cannot piece out a machine by taking one part here, 
another there, and a third elsewhere, and bring the whole forward 
as an anticipation of the patent in suit. Most patents to-day are 
for new combinations of elements all of which, separately considered, 
are old. Such a patent can only be overthrown by showing the 
prior use or description of the same elements, or their mechanical 
equivalents, assembled in a machine performing substantially the 
same operations. And the more useful or meritorious an invention, 
the more do the courts inchne in its favor when thus attacked, and 
the stricter the proof they require of clear anticipation. 

A question that may naturall}^ be asked I will endeavor to answer 
here. It may be said, since the United States Patent Office cannot 



15 

secure an inventor against this state of the art completely, why does 
it attempt to do so at all? The foreign patent-granting countries, 
with the exception of Germany, adopt this Adew and grant to an 
appHcant whatever he claims as his invention, leaving it to the courts 
or to future circumstances to determine what the extent of his real 
invention in the premises may be. This was likewise our method 
prior to 1836. I think our method of a partial examination is 
the better one for several reasons, one of the foremost being that 
it, in a great many instances, saves inventors from a further expendi- 
ture of time and money in the promotion of a patent that is clearly 
invalid by reason of a prior United States patent granted for the 
same subject-matter. The inventor being met at the outset by a 
patent on all fours with his idea is saved from going further, and 
capital is saved from investment in a patent clearly invahd at the 
outset. Then, too, our office, if it does not show the appHcation to 
be invahd in toto, acts beneficially to restrict the applicant within 
the field that he may reasonably be entitled to occupy and thus 
saves him from an erroneous view as to the extent of the ground 
his patent may cover. Then, lastly, it should be borne in mind that 
the popular view is that a patent granted by the government amounts 
to a guarantee of originality, and this impression, however erroneous 
it may be, as we have seen serves to prevent very many would-be 
infringers from trespassing upon the territory of a patent, as they 
would undoubtedly do if the field were known to be open to all, 
as in the case of patents granted abroad, where there is no examination 
made as to novelty before grant. 

While, therefore, the odds against the validity of a patent seem 
to be very great, they are in effect and in the practical working out 
of the system much less than they appear to be, and what has been 
said upon this subject should not be taken as a discouragement 
either of inventors or inventions, but simply as a statement showing 
.the true position which a patent occupies in the total field of invention. 



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